Why is your trademark registration getting rejected by USPTO?

 

Applying for a trademark license for your brand is important, but it is not always straightforward. In fact, nearly 20% of all trademark filings are rejected on their first application (Valeriano, n.d.), so if it happens to you, the first thing to remember is that its not the end and you can do something about it. Most rejections for registration are carried out with an office action, where the Examining lawyer lays out the issues involved (USPTO, 2019).

 

Some office actions can seem incredibly complex, and here a trademark lawyer can offer the required guidance to overcome the problem, however, in most cases, having your trademark application rejected requires a relatively simple remedy. In fact, if you know the most common causes for rejection beforehand, you can avoid them and have your trademark accepted first time. Here are the most commonly found causes of trademark rejection to think about:

 

Late filing

Your trademark is there to protect your brand, and you need that protection in place as you go to market. One of the most common problems is that businesses do not seek to trademark their new product until its actually a success. By then though, it can be too late. If another party trademarks a copied with the same name after seeing your success, then your application will be rejected on the grounds of it being too similar to an existing trademark.

 

It doesn’t matter who had the idea first, if they file a trademark for a product like yours before you do, they own the trademark (USPTO, 2018).

 

You don’t search properly

Yes, a search costs money, but the thing is, a rejection is even more expensive. So, search for similar products and services to avoid being rejected by filing an application for a trademark on an existing brand or name (FindLaw, 2017). You should search the trademark office records, state trademarks as they apply to you and internet searches to ensure your trademark is as unique as possible.

 

Understand what you can and cannot trademark

This is important, and there are many things that cannot be trademarked, however one of the most common ways trademarks are rejected under this criterion is by using a descriptive name. For instance, if your business is called ‘Fast Delivery’, then that would be rejected, as such a trademark would prevent other delivery companies from using fast delivery as part of their marketing.

Understanding what you can and cannot trademark is important, check the rules before submitting any application to make sure your brand is suitable.

 

You can’t trademark an idea

While late filing can cause a lot of problems, as noted earlier, filing to early is also an issue. One of the things that the examining lawyer will look at is if your business is actually using the proposed trademark to market your goods and services. Trademarks only apply to things actually being offered for sale, so having a website that talks about an idea for something is not enough. Your sales and marketing operation need to be up and running when you apply.

 

There are, of course, many more reasons for your application to be rejected. The office action will inform you, but these are by far the most common issues that businesses encounter when getting their trademark rejected. By checking these beforehand, you will significantly reduce the chances of your trademark application being rejected at that first try (LawInc, n.d.).

 

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